BREXIT – Implications for Patents, Trademarks and Designs

a Detailed Guide (BREXIT Deal and No-Deal)

Have you ever wondered whether you need to act on your patents, trademarks, and designs because of the BREXIT, Britain’s withdrawal from the EU? From 30 March 2019, EU Trademarks and EU Designs will no longer have any effect in the United Kingdom. For European Patents, on the other hand, little will change.

First, I will deal with patents, which is probably the easiest thing to do. Then I will say something about brands. Finally, I will deal with the most dangerous topic – namely designs.

First of all, it is clear that the UK will remain a member of virtually all important treaties in the field of intellectual property, such as the TRIPS Agreement, the Paris Convention, and so on. Under the TRIPS Agreement, the UK has undertaken to grant patent, trademark and design protection for a limited period of time. Since the United Kingdom has contributed to instruments such as EU Designs or EU Trademarks, the United Kingdom is obliged to maintain this protection even after leaving the EU in the United Kingdom. Britain must, therefore, create an opportunity for property rights such as EU Designs or EU Trademarks to continue to have some form of effect even after BREXIT. Otherwise, Britain would in all likelihood be in breach of the TRIPS Agreement. At the moment, there are two alternatives for the way forward: an agreement can be reached between the EU and Britain or that no agreement can be reached. Both the EU and the UK government have already warned industrial property right holders that it is now not unlikely that no agreement – a hard BREXIT – will be reached. If there really is an agreement between the EU and the UK, then the UK and all EU states would have to ratify this agreement, which is becoming increasingly unlikely given the limited time remaining and the possibly different positions of the remaining EU states.

If there is still an agreement with the EU, a transition phase is foreseen until 31 December 2020, during which the United Kingdom will, in fact, continue to be part of the system of EU Trademarks and EU Designs. EU Trademarks and EU Designs are then also expected to be newly registered in Great Britain by 30 September 2021 without losing their seniority, provided that they had not been registered as EU rights by 31 December 2020. A draft agreement between the EU and the UK was published on 19 March 2018. Basic rules on industrial property rights are proposed in Articles 50 et seq. of this Agreement.

Since the end of August 2018, Great Britain has published guidelines for the case of a hard BREXIT. So far there are no guidelines on patents, trademarks or designs. However, this is expected shortly.

So I will always look at both scenarios in the following.

European Patents after the BREXIT

Great Britain is a member of the European Patent Convention, which is not limited to the EU but also has many non-EU members such as Switzerland, Turkey, Iceland, and Norway. The United Kingdom will continue to be a member of this agreement. You will continue to be able to validate patents in Great Britain.

The United Kingdom also ratified the UPC Agreement on 26 April 2018. Germany has not yet ratified this agreement to the UPC agreement. And the decision on the constitutional complaint, which prevents ratification, is not expected until the end of 2018 (file number 2 BvR 739/17). However, the UK intends to remain part of the UPC patent system, as formulated in a July 2018 UK government white paper. This would provide considerable added value for patent holders. However, it is still unclear how this could be achieved.

Supplementary protection certificates existing before BREXIT will continue to have an effect. After BREXIT, only supplementary protection certificates for the remaining EU countries can be applied for (confirmation by the EU and Great Britain). Great Britain also plans to establish a supplementary protection certificate for the period after BREXIT.

EU Trademarks

EU Trademarks only have an effect in the EU and will, therefore, lose their effect in Great Britain with BREXIT. UKIPO has already confirmed that work is underway to ensure that the EU Trademarks continue to grant trademark protection in the UK with BREXIT. However, this has not yet been decided in Parliament.

The Parliamentary Under-Secretary of State for Exiting the European Union Robin Walker said in a debate on 19 July 2018 that the conversion of EU Trademarks and EU Designs into British trademarks and designs will be free and automatic. Shortly thereafter, he made it clear that in the event of a successful agreement would the conversion be automatic and free of charge. Whether this also applies in the case where there is no agreement between Great Britain and the EU has been left open. But also because of the membership in the TRIPS Agreement, it is as good as certain that there will be a possibility to obtain trademark protection in Great Britain for trademarks registered as EU Trademarks before BREXIT, even after BREXIT while maintaining the seniority of those trademarks.

The conversion of EU Trademarks must take place before BREXIT (Art. 139(1) UMV). It is expected that the United Kingdom will provide appropriate opportunities in good time.

It is very unlikely that EU Trademark owners will lose their trademark rights in the UK under BREXIT.

In the unlikely event that trademark rights could be lost, one can, of course, apply for trademarks in Great Britain even before BREXIT, so that one then has older trademark rights after BREXIT compared to possible “grabbers”.

If the protection of your trademark protection in Great Britain is of considerable economic importance, we recommend that you apply for a British trademark parallel to your EU Trademark or, if you have an International Registration, extend its protection to Great Britain. If you already have an International Registration, it can easily be extended to the UK.

There are a few other things to consider:

From BREXIT, use of EU Trademarks in Great Britain no longer counts as a right-preserving use of an EU Trademark.

English remains one of the official languages at EUIPO and can be chosen as the language of proceedings, as English is the official language of Ireland and Malta.

In contrast to priority, a seniority from a British brand can no longer be claimed after BREXIT in an EU Trademark.

Since EU Trademarks always take a while to be registered (usually more than 4 months), it certainly makes sense, in view of the planned transitional period mentioned above, to obtain British trademark protection parallel to the EU, either via national trademarks or International Registrations, at the latest from about November or December 2018, if one does not wish to rely 100% on the possibility of a transitional period.

EU Designs after the BREXIT

Designs have the problem that they have to be new on the filing date. If, therefore, the situation should arise (and in my view, it is very unlikely) that owners of EU Designs under BREXIT will not be able to obtain design protection in Great Britain based on their EU Designs, then, unlike trademarks, they would not have the possibility simply to re-register the designs in Great Britain.

In other respects, however, the situation is comparable to that of the EU Trademarks. In the event of an agreement with the EU, the conversion will probably be free and automatic. In the event of a hard BREXIT, the UK must provide a means of extending protection under the EU design to the UK.

Unregistered EU Designs as said also be convertible into unregistered designs in the United Kingdom (Art. 53).

Here, too, I consider it very unlikely that design rights will be lost.

Designs have a grace period of 12 months. Therefore, it may make sense that designs published by you in the last 12 months that are very important to you are also registered separately as British designs, as otherwise in the very unlikely event of loss of your design rights you would no longer be able to heal this loss by re-registering.

Great Britain is a member of the Hague Agreement Concerning the International Registration of Industrial Designs. If, for example, you are seeking protection in the EU, Switzerland, Great Britain or other countries, it may be best to apply for a so-called Hague Design.

Jurisdiction

EU-wide court decisions will no longer be enforceable in Great Britain after BREXIT. From BREXIT onwards, courts in the UK will not be able to make any decisions based on EU Trademarks or on the validity or enforceability of EU Trademarks. Plaintiffs and defendants in patent litigation proceedings or other court actions should take this into account accordingly.

Summary and recommendations for action

The BREXIT seems to have practically no negative effects on patents. Whether Britain will also remain part of the UPC system is not yet certain.

As regards EU Trademarks and EU Designs, it is very unlikely that proprietors will be unable to convert these rights in any way into UK rights. Whether this will really happen free of charge and automatically even in the case of a hard BREXIT is not yet certain.

Since I consider the risk of the loss of these industrial property rights in Great Britain to be very low, I think it makes sense that in this case, new applications for trademarks should be filed before BREXIT as soon as it is clear that a loss of industrial property rights will occur. In the case of EU Designs, it may make sense to file applications for designs now for any designs published in the last 12 months as British designs, as in this case, it might not be possible to cure a loss of an industrial property right by re-filing a new application for a design.

If you wish to register trademarks or designs in Great Britain just to be safe or if you have any other questions about BREXIT and your industrial property rights, please do not hesitate to contact us via email or phone.